Etro S.p.A. v. Mahmut Bike

Case No. DCO2010-0051

1. The Parties

2. The Domain Name and Registrar

The disputed domain name <etro.co> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 15, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2011. The Respondent submitted a communication on December 23, 2010.

On December 28, 2010 the Center acknowledged the submission and stated the following in an email to the Respondent:

“We note that the due date for Response is January 6, 2011. Accordingly, the Center would be grateful if you could confirm that the above-referenced communication may be regarded as your complete Response. You may wish to consult the Response filing guidelines available at: http://www.wipo.int/amc/en/domains/respondent/index.html. If this is confirmed by you, the communication shall be so regarded by the Center and we shall proceed accordingly to appoint the Panel. In the absence of such confirmation, if we do not receive any further communication from you by the due date for Response, we shall regard the above referenced communication as your Response and proceed to appoint the Panel.” No further communications were received from the Respondent.

The Center appointed Knud Wallberg as the sole panelist in this matter on January 28, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was established in 1968 and is now is a well known company within the fashion industry located in Milan. The Complainant trades under the trademark ETRO in Italy and elsewhere.

The trademark ETRO has been filed, registered and used worldwide including in the in the Country in connection of which the disputed domain name is registered (Colombia) and in the country where the Respondent has his seat (Turkey).

5. Parties’ Contentions

A. Complainant

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name reproduces the company name of the Complainant, as well as its trademark ETRO, and is resolved to a parking page linked to several web sites on which apparel and related products are offered for sale to the general public.

B. The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent does not have any right over the trademark involved and has no lawful interest relating to the same.

The contested domain name does not correspond to the business name of the Respondent and, according to the Complainant’s knowledge, the Respondent is not commonly known as “Etro”.

Finally, the Complainant has never licensed or otherwise authorized the Respondent to use its ETRO name and mark.

C. The domain name was registered and is being used in bad faith.

The contested domain name <etro.co> was registered and is being used in bad faith for the following reasons:

When registering the domain name, the Respondent did not provide a full address in its WhoIs contact information. This indicates that the Respondent does not want to be identified or found, and providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it ‘made in [its] Registration Agreement are complete and accurate.’ Maintaining that false contact information in the WhoIs records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative Complainant from identifying the registrant and investigating the legitimacy of the registration.

Moreover, there are circumstances present indicating that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site. As indicated above, the domain name is connected to a parking page linked to several web sites offering for sale apparel and related products. Several WIPO UDRP decisions have stated that the registration and use of a domain name to redirect Intemet users to websites of competing organizations constitute bad faith registration and use under the Policy.

The Respondent’s commercial gain is evident, since it is obvious that the Respondent’s sponsoring activity is being remunerated.

The Complainant further states that they could not find any legitimate use of the domain name <etro.co>, and that any other purpose of the owner of the contested domain name would be to resell the same to the Complainant, which represents registration and use in bad faith, according to paragraph 4(b)(i).

B. Respondent

The Respondent did not file a formal Response in reply to the Complainant’s contentions, but stated the below in an email of December 23, 2010. This communication was acknowledged as a Response by the Center, and the Panel concurs with this decision.

“I would like to inform you that; every conditions suit for the ICANN rules. My web site is not for sale and there are not anything for the selling. my web site is empety also. You may check my web site and you can see that it is empety. I preparing something about my own products. its heavy rack systems. I have no bad idea. If your web site or the products they sell a similar product you are right. but I think in a different product to sell. Why not give you prayed? the site content is empty and for sale did not write yet. every things under international rules.

If my web site is in the dispute then let me know that; why the www.etro.com.tr is still opened.

This site has different contents and different products.

Is the ICANN rules for just my web site?

please step into a dispute last Let your domains. www.etro.com.tr domain! name will explain in what way?

I did not just mimic a site's products ever want to sell my products. etro brand products we sell similar products already proves that if you are right. I bought the Domain Name offered for sale are first applied to ICANN rule, this is a rule”.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The disputed domain name contains the Complainant’s distinctive trademark ETRO, with the addition of the “.co” ccTLD designation.

Since the inclusion of the ccTLD denomination “.co” shall be disregarded for the purpose of these proceedings, the Panel finds that the disputed domain name is identical to the Complainant’s registered trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Respondent’s Rights or Legitimate Interests

According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.

The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this by way of a formal Response and the Panel notes that the Respondent´s submission of December 23, 2010 does not occur to contain any information of relevance to the case.

The disputed domain name was registered several years after the Complainant first registered and started using its trademark ETRO, and the Respondent is currently using the disputed domain name for a website that contains only links to websites that offer products and services that are similar to and in competition with those offered by the Complainant. The Respondent thus could not credibly claim that the disputed domain name is intended to be used for any legitimate purpose.

Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith.

Given the circumstances of this case, the Panel is satisfied under the specific circumstances of the present case that the Respondent is likely to have been aware of the Complainant, its ETRO mark and the Complainant’s activities when registering the disputed domain name. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.

The Panel therefore finds that the disputed domain name was registered in bad faith.

Further, at the time of rendering this decision the disputed domain name was used for a website which contains links to websites that offer products and services that are similar to and in competition with those offered by the Complainant. The Panel therefore finds that the Respondent by its registration and use of the disputed domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has proven paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <etro.co> be transferred to the Complainant.